CAFC in IGT v. Bally: NOT "one and only one"

The claim at issue-->

Independent claim 10 of the ’885 patent includes many of the claim terms in dispute:

A method of operating gaming devices interconnected by a host computer having a user-operated input device comprising:
associating each gaming device with a unique address code;
preselecting less than all of the gaming devices interconnected by the host computer . . .;
using the network to track activity of the preselected gaming devices;
issuing a command over the network to one of said preselected gaming devices responsive to a prede termined event; and
paying at said one gaming device in accordance with the command.



The conclusion of the CAFC:

We agree with IGT. The meaning of the word “one” in this claim is clear from the words that surround it— “issuing a command over the network to one of said preselected gaming devices” and “paying at said one gaming device in accordance with the command.” Certainly the use of “one” in this claim is limiting in that a command will go to one of the preselected gaming devices. The command will cause one device to pay. Hence “one” modifies devices that will receive a particular command, not the number of commands that might be issued. The second use of “one” further supports this construction – “one” gaming device will pay in accordance with the command. These claim limitations are directed to a command which will go to one device and cause that same device to pay in response to a predetermined event. A single command must be issued to a single gaming device. The claim, however, does not limit the number of com- mands that could be issued to discrete gaming devices. Nothing in this limitation requires issuing only one command to only one machine. Bally would have us rewrite the claim to say “issuing only one command . . . to only one of said preselected gaming devices.” We refuse to adopt this strained construction.

Bally's argument:

Bally argues that we have held that the meaning of “one” is “one and only one” citing WMS Gaming, Inc. v. International Game Technologies, 184 F.3d 1339, 1350 (Fed. Cir. 1999). Bally argues that, like WMS Gaming, the claims here rely on the “one” language for antecedent basis with the requirement of “paying at said one gaming device.”

BUT

Here, the claim requires “issuing a command . . . to one of said preselected gaming devices,” not issuing one com- mand, which would more closely track the language in WMS Gaming. We caution that claim language must be construed in the context of the claim in which it appears. Extracting a single word from a claim divorced from the surrounding limitations can lead construction astray.1 Claim language must be construed in the claim in which it appears.

And note footnote 1:

We recognize that in a different district court case, the court construed “one” as one and only one com- mand. Mikohn Corp. v. Acres Gaming, Inc., No. CV-S-97- 1383-EJW (LRL) (D. Nev.). As counsel for both sides acknowledged, such a construction was merely persuasive authority and did not bind the district court in this case.